Roberto J. Fernandez


Roberto J. Fernandez


Roberto Fernandez is a seasoned patent attorney that understands how to construct a formidable patent portfolio with strategic business advantages that can be leveraged against competitors for years to come. In addition to extensive experience preparing and prosecuting utility and design patent applications, Roberto has conducted oral hearings before the Patent Trial and Appeal Board (PTAB), serving as lead counsel multiple times. He has also served as counsel in numerous inter partes review (IPR) proceedings before the PTAB and in district court actions for patent infringement. He has also performed due diligence reviews of intellectual property portfolios in connection with various business ventures, including acquisitions, spin-offs, and more.

Roberto’s technical experience spans numerous fields, including automotive systems, engines, power generation systems, additive manufacturing, medical devices, consumer products, refrigeration, solar systems, lighting systems, fitness devices, and various electronic devices. He has also represented a significant number of pro bono clients and is honored to have helped many secure patent protection for their inventions.

Roberto is a member of the firm’s Mechanical & Electromechanical Technologies Practice, PTAB Trials Practice, and the Design Rights Team. He is also a member of the firm’s Automotive, Food & Beverage, and Energy Industry Teams.

Awards and Recognition

  • Illinois Super Lawyers® Rising Star (2022, 2023)


  • Member of the PTAB Bar Association

Presentations and Publications

  • Panelist, Practice Before the PTAB, PTAB Bar Association (July 2022)
  • Presenter, Idea – Invention – Industry, Chicago Inventors Organization Annual Conference (October 2019)
  • Alumni speaker, Milwaukee School of Engineering Annual Scholarship Luncheon (October 2016)
23 August 2023 Blogs

Nothing for Free: Federal Circuit Clarifies Commercial Success is All About Sales

In affirming final written decisions of the Patent Trial and Appeal Board (PTAB) in two inter partes reviews (IPRs), the Court of Appeals for the Federal Circuit (CAFC) ruled that only actual product sales count toward a showing of commercial success.
11 July 2023 Manufacturing Industry Advisor

Top Legal Issues Facing the Manufacturing Sector in 2023

As we embark on the second half of 2023, this second annual Manufacturing White Paper examines the business and legal considerations that continue to impact the industry and offers the perspectives and insights of attorneys with deep experience serving as trusted advisors to manufacturing companies.
09 March 2023 In the News

Roberto Fernandez Discusses New PTAB Fintiv Guidance

Foley & Lardner LLP Associate Roberto Fernandez is quoted in the Law360 article, “Vidal Puts Fintiv Back In The Spotlight With New Ruling.”
01 March 2023 Blogs

USPTO Director Vidal Closes Fintiv Escape Hatch on Discretionary Denial

Practice at the Patent Trial and Appeal Board has evolved at a breakneck pace during the tenure of U.S. Patent and Trademark Office Director Vidal.
24 January 2023 Honors and Awards

Foley Attorneys Named to 2023 Illinois Super Lawyers List

Foley & Lardner LLP is proud to announce that 23 of its Chicago attorneys have been named to the 2023 Illinois Super Lawyers and Rising Stars lists.
24 August 2022 Blogs

Take the LEAP – Maximizing Oral Arguments Before the PTAB

More than two years have passed since the United States Patent and Trademark Office (USPTO) created the Legal Experience and Advancement Program (LEAP) to develop the skill of practitioners in presenting oral arguments to the Patent Trial and Appeal Board (PTAB).